Appeal No. 2006-2369 Page 19
Application No. 10/169,618
more molecules condensed” being “especially . . . suitable.” Thus, rather than
presenting an extremely broad genus without guidance as to which species to select,
Sony ‘649 provides a limited selection of polysaccharide moieties and directly suggests
the claimed polysaccharide moiety consisting of a starch hydrolysate having a relatively
high molecular weight.
With respect to the isocyanate moiety, Sony ‘649 and Sony ‘775 respectively
disclose four and seven specific isocyanates (Sony ‘649 at [0009]; Sony ‘775 at [0012]),
useful in preparing polysaccharide urethane derivatives for video photographic paper.
At least two of the compounds disclosed by the references overlap (phenyl isocyanate
and cyclohexyl isocyanate).3 Thus, Sony ‘649 and Sony ‘775 disclose at most nine
different isocyanate compounds which can be used to prepare polysaccharide urethane
derivatives. Again, contrary to Appellants’ argument, the references’ specific disclosure
of a limited number of preferred candidate compounds, including one encompassed by
Appellants’ claims, goes well beyond the broad generic disclosures encompassing
hundreds of millions of compounds, discussed in Jones and Baird.
In our view the court’s decision in Merck & Co. Inc. v. Biocraft Labs., Inc. governs
the fact situation before us more closely than the decisions in Jones and Baird. In a
genus-species situation of the type addressed in Jones and Baird, the court in Merck
considered the obviousness of claims directed to diuretic compositions comprising two
particular ingredients in a specific ratio. Merck, 874 F.2d at 805-807, 10 USPQ2d at
1844-1846. A prior art reference disclosed over 1200 possible combinations of two
3 The compounds listed in Sony ‘775 include “toluyl one” isocyanate. It is unclear whether this
corresponds to either of Sony ‘649’s “m-tolyl isocyanate” or “P-tolyl isocyanate.”
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